Scholarship Roundup: A Guide to the Legislative History of the America Invents Act

By Jason Rantanen

One of the challenges of working with the Leahy-Smith America Invents Act stems from its legislative history, which is scattered through more than five years of Congressional materials.  To address this challenge, Joe Matal, Judiciary Committee Counsel to Senator Jon Kyl, recently published a comprehensive guide to the legislative history of the AIA in the Federal Circuit Bar Journal.  Matal's compendium provides both a history of the Congressional discussion leading up to the AIA as well as a roadmap to the relevant legislative materials, linking them to particular provisions of the AIA and explaining how to locate each source.  Part I addresses the portions of the AIA that relate to applications before a patent issues, while Part II deals with the portions that apply after a patent is granted.  I highly recommend both to anyone who is analyzing or providing legal advice on the AIA.

A copy of Matal's article is available via SSRN:

Thanks to Professor Colleen Chien for bringing Matal's article to my attention.

51 thoughts on “Scholarship Roundup: A Guide to the Legislative History of the America Invents Act

  1. 51

    “You get what you measure” has been around long before quality initiatives like Six Sigma.

    In fact, the advent of business methods as a true science was taking that known aspect and a through rigorous scientific approach chose more wisely exactly what it was that management measured.

    Just because the Office decides on innovation every day does not mean that it understands the innovation of management itself.

  2. 50

    6,
    I’m glad to see such a frank assessment by a current examiner, though I must admit my immediate reaction to the part about “a somewhat lackadaisical attitude towards ‘quality’ or ‘doing the examination correctly'” was a silent “ARGGHHHHH!!!” And here I’d naively thought the examiners sincerely wanted to do as high-quality a job as they could, given limitations of time and technical expertise (i.e., lack thereof). Your epiphany can be summed up as “Numbers drive bad behavior. At all levels.” You get what you measure. Apparently, under the current system, counts matter above all else, including quality. The PTO is hardly unique in this regard. The problem relates to a love of quantifying outcomes (partly stemming from manufacturing quality initiatives like Six Sigma) so that you don’t have to make a judgement (i.e., think); it’s enough to boil it down to the counts, or whatever else the organization cares to measure.

  3. 49

    Here we go again nothing for the worlds top conciever independant inventors and programs for kids that cant invent anything. If they can find a wrong direction theyle take it.

  4. 48

    Just lovely we can now look at the road map of how the legislators bungled the provisions they touched and ignored the top inventors imput into exactly what was needed to make the system usable from totally unusable in 40 manors of theft and corruption for inventors its present state

  5. 45

    Ned,

    See my post below.

    Your reasoning at 3:08 PM is exactly the type of circular and self-reinforcing reasoning that must be avoided in understanding the new law.

    The law explicitly changes the order and context of the items making up prior art. The law explicitly said it was making substanive changes to that section. If, and it is a stretch to impute ambiguity even if one want to, the legislative record is clear and you are not at liberty to ignore the remarks of Sen. Kyl even if you believe those remarks were made in error. All of the other Senators had the opportunity to put on record any rebuttal. The record is closed and you are not free to add anything to the four corners of that record.

    Of course, this is not to say that the courts will do what they want anyway, and would not be the first time that congressional law is supplanted by judicial law. The purists, though can and do recgonize that the legislative law takes precedence.

  6. 44

    Third way to overturn (and only half in jest):

    Classify the holding narrowly and ignore the dicta.

    Be that as it may, whether congress fully intended or not is not material, as the law of unintended consequences reigns, and many have warned that the AIA as written is full of landmines only some of which are nebulous enough to permit a review of the congressional record. Others must be taken at their face value, even as that face value overrides precedent, doctrine and policies.

    Congress was explicit that this was a major re-write intended for substantive change. That is on the record, and this is key. The desire to import previous case law on the slendor turns of phrases must be checked.

    As such, the old case law does not apply, certainly to the point of disagreeing with the direct words of the new statute. Paul, my distinction of June 22 applies in full. It would be a circular argument to use pre-AIA cases in order to establish the legitimacy of those very pre-AIA cases. It would be like assuming the premise that you need to prove.

    As for the references to Hal Wegner, I know and respect Mr. Wegner greatly… however, Hal does tend to write from his heart and what he thinks the law should be rather than from his head and what the law actually is. His writings cannot be taken as gospel as they preach too much (pun intended).

    For example his Kyl-post vote insertion ignores the fact that is was only the first Senate vote that was before the insertion. Both the House and confirming Senate votes were after the insertion and the Kyl insertion must be recognized as legitimate.

  7. 43

    6, lot to think about here.  But clearly director Kappos ought to read your post.

    The problem I find in most middle-management is that they too are only looking out for themselves.  They want to look good to their bosses and could care less about whether the job is done right or wrong long as they themselves come out smelling like a rose.

    So if the bosses reward short-term profits, that is what is delivered no matter how it is accomplished.

  8. 42

    “On examination, most examiners I run into are solid folk, like you. They listen to what I have to say. If I am wrong, they point out why, and I fix the problem. So, in my own experience, the system largely works.”

    That is interesting that you would say that Ned. As I understand it many of your fellows do not share this view. And from my own brief investigations of the matter through the last year I would tend to agree with your fellows rather than the view that on the whole everything is hunky dorey.

    Indeed, if I were an attorney I fear that I would be NAL x 20 at least in terms of btching about substantive errors blatantly being made.

    On the whole, yes, some relevant art will usually be cited. A good amount of time it will be “in the ballpark” of the invention. But it won’t be a 102 when it is called out as being a 102, or else there will be a limitation or two missing from the explanation and the reference(s) used in the rejection. If I had to guess this is why the QA dept comes up with their ridiculous quality numbers they issue. Because the rejection is being issued so closely that it does take a keen eye to even see what is going on, much less spot a mistake.

    “It is just that I think things could be improved a bit, such as one more round of substantive examination/search before there is a final.”

    How does that improve anything Ned?

    ” BRI largely forces this result, IMO, because the first action and response are there just to clarify claim language and scope. The initial search may not have been as fine tuned as one would desire.”

    Try doing it how the pros do it and include a few narrow independent claims bro. If you want a “good search” then that is a must. If you want a less than good search then draft the way hordes of t ards draft.

    “On working in the PTO, I think individual merit should be recognized, encouraged and rewarded. ”

    Everyone says that, but it is largely lipservice. The people that are recognized are the people that are doing 3 actions on avg per case (not BD) whilst maintaining high production no’s. While someone that disposes of nearly every case in less than 2 actions (like literally I only had like 5-7 RCE’s last year) and did literally no 2nd action non-f’s in a year, and literally has attorneys who sing praises of my actions barely gets a pat on the back. Not to even mention avoiding ridonkulous 103’s and using 102 art that is way off base and is 9/10 exactly what they were inventing not in “wording of the claim” only, but literally the very embodiment of the claim which they’re describing in the spec. And that’s not to say that I’ve not made any mistakes over the last year, there have been some few. All corrected on the next action with allowance of the claims, although the possibility of a 2nd non-final was present, I did not have to issue such since I did apply the best art, and indeed ensured that if it were at all questionable (due to my being in a new art for some of the year) then I made sure it was the only art standing in the way of an allowance.

    Barely a mo fin’ pat on the back. F um. Screw quality. Screw compact prosecution. Bullsht can flow forth from my fingers just as surely as quality can, and it flows way faster. Ensuring that I remain ignorant of what is being claimed likewise goes way faster. Why spend two or more hours trying to understand an invention that the applicant clearly is only explaining in terms geared towards the other 20 people on the whole face of the planet that are in his niche when I can just take a bs interpretationlol and get some counts?

    “Getting it right is what counts,”

    Why don’t you tell it to Kappos? To his face. And then tell him that his “credit” system doesn’t reflect that.

    “and the senior examiners should know what to look for in that score.”

    Oh they know what to look for alright. Passable BS. My own SPE told me this in not so many words the other day. I dam near created quite a mess on his desk and walked out never to return, in a manner of speaking. Not to say that they aren’t some of the best examiners in existence on the face of the planet as I will give my betters due credit where credit is due. But when the evidence simply doesn’t support that, and upon even a mere perusal it does not as a whole, I have to have a somewhat jaundiced view. To be clear, we have some outrageously good examiners in the mgmt/primaries. But they appear few and far between. The one thing they’re all good at though, is producing. Which is no skill at all. And is rather a lack of skill.

  9. 41

    6, there is no perfect system, is there?
     
    On examination, most examiners I run into are solid folk, like you.  They listen to what I have to say.  If I am wrong, they point out why, and I fix the problem.  So, in my own experience, the system largely works.
     
    It is just that I think things could be improved a bit, such as one more round of substantive examination/search before there is a final.  BRI largely forces this result, IMO, because the first action and response are there just to clarify claim language and scope.  The initial search may not have been as fine tuned as one would desire.
     
    On working in the PTO, I think individual merit should be recognized, encouraged and rewarded.  Getting it right is what counts, and the senior examiners should know what to look for in that score.
     

     

  10. 40

    You must have got a hold of a couple of bad english speakers eh?

    “The production quota is vital, unless you think the current application pendency is way too short. ”

    Perhaps, but the promotion of new examiners to new levels of responsibility isn’t. Except of course, in the long term, if we stopped promos happening quite so much, people would start leaving, and you would also have less primary level production going on.

    Even so, and this is what I will eventually get around to, getting examiners to “do it right the first time” aka “compact prosecution” SUPPOSEDLY leads to enormous time savings and is a huge win all around. That is a fallacy of course. And it goes hand in hand with the production system leading to the attitude.

    “Assuming that conscientious examiners are not just a theoretical curiosity, can you imagine how long it would take them to produce first actions if they were permitted to use as much time as needed to be 99.44% confident in their decisions?”

    Yes, I’ve been doing it for awhile now. Years in fact. Although I really went hardcore this last quarter. So I can “imagine” very easily. Or I can simply give you a run down of how much I work. It takes approximately 2x the amount of time given for a primary in my AU for a case of any complexity or in a niche of any notable size and somewhere between 1x-1.5x for “easy” cases. Regardless of when I have to put this time in on complex cases (nights weekends, an entire week of examining at end of quarter), it must never the less be put in if I want a reasonable amount of confidence which is actually somewhat less than what you suggested.

    “99.44% may be overkill ”

    Yeah, I would say 90% would be sufficient. But now we’re just quibbling over minutia.

    “Apparently the quality isn’t yet so atrocious that people have decided not to bother filing applications.”

    Worse quality encourages applications, not discourages it. Think bro. Not only bad rejections go out… bad whatchamacalits go out also. Do you remember what those whatchamacalits are?

  11. 39

    “But, I guess, the union contract requires it in some form because otherwise performance appraisal, etc., would be entirely subjective.”

    The union is not above moving to a countless system. Iirc they somewhat fought against it.

    “would be entirely subjective.”

    Are rejections entirely subjective? Is that your viewpoint now Ned?

    You are right that subjectivity would tend to creep in so to speak, but I think that such a thing already creeps into the production system and there isn’t really anything you can do about that other than teach spe’s the difference between an objective inquiry and a subjective inquiry.

  12. 38

    Yes obviously there are small ways to make small improvements in some number of cases. But I’m talking big picture bro.

  13. 37

    Right, which is why I’m commencing doing so myself here shortly.

    But it goes a step further, looking at the institution as a whole. And that step is not simply that shtty work is going out the door. The further step is that there is a lackadaisical attitude towards shtty work going out the door. That is, the people in charge, as well as the grunts, do not mind such work going out the door one little bit. The question is thus, why that attitude?

    Are all these people simply bad/uncaring people? No, I don’t think that is the case, indeed, if you ask some of them they will deny even having such an attitude. Although the evidence which is publicly available clearly shows that they have had this attitude or are incompetent beyond belief. And I do mean beyond belief. So I think that can be ruled out, at least in AU’s outside of software. Some other, slightly more perceptive, ones will not deny it and recognize it about themselves.

    So again, we come back to why the attitude? I will put forth that it is a feature of having a count system, of any sort which is similar to the kind we have, in place.

    That is, if you implement a count system, then you will necessarily create that attitude towards the work.

    Of that I believe we can all be rather in agreement on. Indeed, you see this sort of thing in industry if you have a QA program that is ridiculously bad or completely ineffectual.

    What then to go a step further? Would an enhanced QA program here help? I think not. At least of the sort we have in place now, what we could call a “passive” QA program. I do not believe that simply reviewing the work after, or even before it goes out (2nd pair of eyes), would do much to curtail this attitude. And remember, I’m focused on the attitude, not the fact that bad work is going out.

    Perhaps making quality an equal/more equal partner to production in the PAP would help change the attitude? That is, let’s make the grunt examiners themselves part of the QA team by giving them a stake in quality.

  14. 35

    Mr. Time, there are only two ways to overturn a Supreme Court decision, by statute or by another Supreme Court decision. Even if you think the Supreme Court got it wrong in Pennock v. Dialogue, it remains controlling law unless and until Congress or the Supreme Court overturns it.

    I think there is a good question on whether Congress fully intended to overturn Pennock v. Dialogue. What are your views?

  15. 34

    Paul, I agree that on sale bar has always been an estoppel, a personal bar. Hand in Metalizing clarified the issue, but Pennock v. Dialogue decided the policy that one could not (equitably) commercially exploit the invention in secret for any number of years and then obtain a patent when it appears others are learning the secret. In response to this 1829 case, Congress placed the on sale bar into the statute in 1836. But as clarified by hand, the essence of the rule remained a personal estoppel, and not prior art. As such, trade secret use was not prior art even though the court in Pennock v. Dialogue labeled the secret use a public use.

    Given this, and despite the remarks of Sen. Kyl, the courts may still find that an on sale bar remains regardless of the “otherwise clause” of the new statute because Sen. Kyle was mistaken about trade secret use being prior art. The on sale bar has never been prior art except to the extent that the invention is publicly disclosed, in which case it is also a public use.

    If the above is correct, the courts will maintain the distinction observed by Learned Hand in Metallizing that to be prior art, on sale acts must disclose the invention; but nevertheless, per Pennock v. Dialogue, the inventor himself is barred regardless of whether the invention was disclosed publicly.

  16. 33

    Examiners do sh!tty work because they get rewarded for doing sh!tty work. Plain and simple. Don’t overthink it. Which I’m not even sure is possible in your case.

  17. 32

    Dissolving the union is not likely to materially improve quality. What will improve quality is to stop hiring examiners who don’t know English. Even if they’re technologically adept, lack of English comprehension is a liability given that applications (including claims!) must be in English, correspondence has to be in English, and the vast majority of readily available prior art is in English. One also wonders what good is the recent interview emphasis, when attorneys can’t even understand what examiners are saying. This is not meant to be some kind of nationalistic rant. The office has simply been too nonchalant about the issue.

    The production quota is vital, unless you think the current application pendency is way too short. Assuming that conscientious examiners are not just a theoretical curiosity, can you imagine how long it would take them to produce first actions if they were permitted to use as much time as needed to be 99.44% confident in their decisions? There is also the “rational ignorance” phenomenon to consider. 99.44% may be overkill when less than 2% of patents ever see litigation.

    Perhaps the biggest problem with the production quota system is that it establishes limits on only the examiners. Applicants are not so limited. Fees for extra claims and jumbo specs do not go directly toward buying a corresponding amount of additional time for the examiner to slog through them. IDS filings have no “size fee” at all. This system necessarily leads to sloppy work (not to be confused with actual laziness) as 6 alludes to above. It seems that the office has little incentive to change it. Apparently the quality isn’t yet so atrocious that people have decided not to bother filing applications.

  18. 31

    LOL right back at you.

    troll: doesn’t answer questions, who in its LONG sad life, has never made a correct, non-trivial affirmative answer about any subject, and who never will.

  19. 30

    suckie Why don’t you answer the questions

    … says the sockpuppet who, in its short life, has never made a correct, non-trivial affirmative statement about any subject, and who never will.

    LOL.

  20. 29

    Feel free to avoid this one if it makes you unhappy.

    What if it makes you feel eplectic? Please tell us MM.

    How is Myriad going to be decided, Paul? How do you define a “product of nature”?

    Why don’t you answer the questions put to you before you ask more questions?

  21. 27

    I appreciate the background information and cordial discourse (rare, especially on this blog).

    There are other blogs out there. Feel free to avoid this one if it makes you unhappy.

    we can only talk about the (proper) legal foundations that apply in our discussions in the here and now.

    Actually we are free to speculate and discuss the likely probabilities of changes in the law, to our collective hearts’ content.

    try to take a realistic view of how courts might be likely to ultimately decide an issue

    How is Myriad going to be decided, Paul? How do you define a “product of nature”?

  22. 26

    Thanks Paul,

    I appreciate the background information and cordial discourse (rare, especially on this blog).

    I look forward to reading your paper but would make one (very important) distinction if you are relying on old case law: the America Invents Act was stated as a major rewrite of the law and was intended to make substantive changes to the law – especially concerning 102 and prior art. As such, the cases you lean on are quite likely of no consequence going forward.

    Further, the point being made was that there was a logical error in those cases. Merely saying “Here’s the case” neither addresses the logical error made, nor addresses the fact that now that the logical error is known and understood, that the error will not (as) likely be repeated. That is, after all, the entire point of this discussion.

    It is true that future cases argued in front of the Supreme Court and the Federal Circuit will flesh this out, but of course, when that might happen and how it may go down are unknowables, and we can only talk about the (proper) legal foundations that apply in our discussions in the here and now.

  23. 25

    It’s the Sup. Ct. and Fed. Cir. cases quoted in my paper, and others, that strongly view adding a patent term onto a long trade secrecy protection term for the same company as being against public policy, so your views on that subject will have to convince them, not me.
    [I always figured that my job, not being a professional academic, was to try to take a realistic view of how courts might be likely to ultimately decide an issue, irrespective of my personal opinions of what I think the law SHOULD be from a patent lawyer viewpoint. I try to practice making that distinction clear on blogs like this that young patent attorneys or students might be using for CLE.]

    Thanks for a good debate.

  24. 24

    It should be pointed out that trade secret law is not a federal question.

    It’s about Time is correct in identifying the “false premise” of the supposed violation of the constitutional “for limited times” clause.

  25. 22

    but it does not address or affect the Metalizing Engineering doctrine or its policies

    Why do you think this? (and if you answered this in your paper, my apologies as I intend to read your paper this weekend)

    WOULD still provide an indefinite period of intellectual property protection of an invention, because the time period of trade secrecy protection is indefinite

    But Trade Secret is not patent protection. Trade Secret is not covered under Article I, Section 8, Clause 8 (even if it is now drafted into, or otherwise affected by, the AIA). Therefore, the premise remains false. You are failing to recognize that the time of protection under Trade Secret has nothing to do with the time of protection under Patent. In other words, I reject the false premise of the expanded “intellectual property” protection, because that purposefully misrepresents what actually is covered under the constitution.

    And yes, technically, the law under AIA allows patent protection on the 100? year old secret formula. As I said, that formula is new to you (the public), and a patent, granted in exchange for the disclosure, but for which, the world STILL does not have that secret would STILL ACHIEVE promotion, regardless of the length of time of Trade Secret.

    The simplified version is that under Trade Secret you (the public) don’t have something that under Patent you (the public) do have. Quid Pro Quo is still exactly the same. If you think the explicit elements of the Quid Pro Quo are somehow different, I would love to hear exactly what elements those are (and yes, this excludes any benefit accrued under Trade Secret, as I have shown, Trade Secret does not fall under the constitutional patent clause).

  26. 21

    The AIA’s commercial prior secret user provision has certainly made trade secret protection safer from later patents of OTHERS, but it does not address or affect the Metalizing Engineering doctrine or its policies. It does not make it any easier to get a patent after, and in addition to, prior secret commercial use.
    Allegedly overuling the long established equitable [NOT prior art] case law of Metalizing Engineering WOULD still provide an indefinite period of intellectual property protection of an invention, because the time period of trade secrecy protection is indefinite.
    [Do you think, for example, courts will support now getting patent protection on something like the 100? year old secret formula for Coca Cola for 20 more years as long as they file within a year after they publicly expose the secret formula?]

  27. 20

    There are more important things to focus on.

  28. 19

    Perhaps the lesson here is that the “as fast as possible” premise underlying Metalizing has been replaced with a more commen sense premise of “if it’s new to you, it’s new.”

    As can be clearly seen with PUR, Trade Secrets are no longer considered Taboo in the world of patent law.

    Further, allowing even old Trade Secrets to acquire patent protection promotes because the item for which protection is sought must be disclosed and thus does enter the realm of limited times (also highlighting a logical error in the Metalizing premise of TS + P = infinite time).

  29. 18

    Probably true, 6. But we could also improve patent quality in some cases by being more aggressive with 112 2nd, and by weakening compact prosecution so that we can get indefiniteness problems corrected before we search.

  30. 17

    Hey did anyone else notice this error on page 495 of the article (pdf page 61 of 79 of the first download.)

    “During consideration of the AIA on the Senate floor in March 2011, Senate Majority Leader Harry Reid offered an amendment that expanded the definition of “micro-entity” to include public universities and colleges in jurisdictions that are eligible for The Experimental Program to Stimulate Competitive Research (“EPSCoR”). EPSCoR is a “temporary” program(first authorized in 1978) that directs extra federal grant money to jurisdictions whose universities are deemed to receive an inadequate share of federal research-and-development funding. Twenty-seven states are currently eligible for EPSCoR. Predictably, Senators from some of the other thirty-three states objected to the EPSCoR restriction in this definition…,”

    FYI 27+33= 60 DUDE…..LEARN TO ADD! (or did we add some states last night??)

  31. 16

    P.S. A true Metalizing Engineering fact situation is one in which the patent applicant itself has been commercially using a trade secret manufacturing process to make and sell products, which sold products do NOT contain or disclose the secret invention which is the subject of that later-filed patent application by that particular individual or company. That is not prior art even now. It is an act which has no effect on anyone other than an attempt by the commercial trade secret user itself to also later obtain enforceable patent protection on that commercialized trade secret.
    That is not the same fact situation as a normal “on sale” bar, in which one or more products are offered for sale or sold which products DO contain or disclose the invention. Such a sale or offer for sale and the subject products may or may not be maintained in confidence. Under existing (pre-AIA) law, the “on sale” act creates prior art, and will become a statutory bar after one year, against everyone.

  32. 15

    the extent of power that Congress has far exceeds that which was thought to be in place when Pennock was decided

    Not to be too too much of a conspiracist, but chalk this up to the lure of a one-world government. That concpet is an underlying driver in both Golan v Holder and in the America Invents Act. From a constitutional standpoint, past doctrines, including the one noted by Paul F. Morgan, have been sacrificed to the ‘promised’ better promotion that a one-world system would bring. In Golan v Holder the Court has already punted on the constitutional questions that the America Invents Act sounds out.

    And continuing on the conspiracist tone, it is easy to see exactly who benefits most from a one-world system:

    the large multi-national conglomerates, aka

    the entrenched large multi-national conglomerates, aka

    the congressman-in-my-pocket entrenched large multi-national conglomerates, aka

    the owing-no-allegiance-to-ANY-one-country congressman-in-my-pocket entrenched large multi-national conglomerates, aka

    the anti-patent-because-patents-allow-disruptive-new-technology-owned-by-uncontrolled-entities-to compete owing-no-allegiance-to-ANY-one-country congressman-in-my-pocket entrenched large multi-national conglomerates.

    Tomorrow is here today. Welcome to the brave new world; same world as the robber barrons of yesterday, where the golden rule is that he who has the gold makes the rules.

  33. 14

    “Legislative history” (i.e. what’s on the record) and actual history are two different animals. There’s a reason why Scalia doesn’t put much stock in the legislative history. Unless Smith, Leahy and their ilk write tell-all memoirs – or the people at the companies who bought their services do the same – most of us will never know the real history of this particular legislative turd. I’m not holding my breath.

  34. 13

    The above thread is well into one of the more serious AIA legislative history conundrums that I previously discussed in detail in “The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act,” 2011 Patently-O Patent Law Review 29. As that article demonstrates, the Metalizing Engineering doctrine is a personal equitable estoppel, not a statutory bar, not prior art, and not a statutory interpretation. It is based on very strong public policy reasons against obtaining sequential and/or overlapping trade secret AND patent protection, well recognized in the Fed. Cir. and Sup. Ct. case law cited. It is a purely personal “forfeture” estoppel, not applicable to anyone but an applicant who had been commercially practicing the same invention under trade secret protection for more than the grace period.
    Unfortunately, as noted, there is alleged legislative history confusing this particular fact situation and its law with other fact situations as to the impact of AIA Section 102(a)(1) as well as prior Section 102. [Nor was it only members of Congress who were confused.]

  35. 12

    6, good that you can see the forest through the trees. Most of us on the other side of the fence see the quota system as a curse and would really like to get rid of it entirely for any number of reasons. But, I guess, the union contract requires it in some form because otherwise performance appraisal, etc., would be entirely subjective.

    Solution, do away with the union?

  36. 11

    Sausage, I reluctantly agree. If Congress can grant copyright holders copyrights in works long in the public domain, it can, it would seem, do the same with respect to inventions long in public use regardless of whether the public has received a full disclosure, so long as, that in the end, the time of exclusivity has some limits and the public eventually receives the unrestricted right to use.

    It looks like the big boys who favor trade secrets got their cake and ate it too.

  37. 10

    I had a bit of an epiphany today which I will share with you guys.

    As you may be aware, there is a somewhat lackadaisical attitude towards “quality” or “doing the examination correctly” at the PTO. And eventually this leads some people into trying to defend just plain ol’ horrible rejections. The question of course is why does this occur? The traditional answer has been that they just want the counts or an RCE, or whatever credit, and/or are not capable of doing the rejection right in the first place. And unquestionably that is correct in at least some cases as ineptitude abounds. You have entire AU’s that are incapable of correctly construing claims for instance. However, this is not the whole story, and this is what I was thinking about today. I would like to go a step further and suggest that this phenomena is actually a feature of the count system. Or, perhaps you might call it an unintended consequence. But I think it is more of a feature. In other words I suggest that it is an institutional mechanism that directly causes this phenomena. I will ponder the situation a bit more.

  38. 9

    Not quite what I had in mind in regards to the other Senators.

    Each is responsible for their own votes, and there is no “relying on” to assuage the final outcome.

    No. Instead, what I meant was that the vote is done, the die is cast. It simply does not matter what the Court has said in the past, as the authority for making patent law, yes, even bad patent law lies with Congress.

    I do recall some of the discussions in the past. But I think those discussion were prior to the revelations from the more recent Golan case. It is clear from that more recent case that the extent of power that Congress has far exceeds that which was thought to be in place when Pennock was decided. For the Court to agree that Congress can actually pull something out of the public domain and make private again is a power that would shock, and I daresay disgust the Pennock Court. Be that as it may, it is the law of land here and now.

  39. 8

    Sausage, what is remarkable is that the Senate seemed fully aware that they intended to limit “on sale” to products embodying the invention, and to permit indefinite and extended trade secret usage of an invention without any penalty, at one point, calling the exclusion of such activity without any good reason, ignoring the policy statements set forth by the Supreme Court itself in numbers of cases of which Senator Kyl and his colleagues seemed totally oblivious.

    We have had extended discussions here of the policy ramifications of encouraging extended trade secret usage. I think the best was by A New Light who opened my own eyes on the ramifications of such encouragement.

    But the Supreme Court recognized the problem itself, first, in Pennock v. Dialog. To permit long secret use followed by the obtaining of a patent would encourage trade secret use in direct opposition to the very purpose of the patent laws, disclosure of new technology in exchange for exclusive rights.

    If anything in the new act is borderline unconstitutional for policy reasons, it might be this. But it is now clear that Kyl was operating under a misimpression. Perhaps it would be for the best for the Supreme Court hold this act unconstitutional if it was apparently a mistake. As you suggest, the rest of the Senate seemed willing to rely on the good Senator for getting the law and policy correct.

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    I wonder just how the Supreme Court is going to deal with Kyl.

    How do you propose they deal with Kyl?

    After all, all those other Senators seem to have no problem with what he was saying and bought into and passed the legislation.

    Besides, legislative history is not dispositive and even is only resorted to when the unerlying law is vague and cannot be figured out. Do we have the law itself at that state of vagueness?

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    It is frightening, though, to have fundamental legislation crafted to do away with something that did not exist.

    I wonder just how the Supreme Court is going to deal with Kyl.

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    Some say Kyl was perfectfully aware of what he was doing, including the timing and even muttering something about a lack of quorum prior to inserting one his comments into the “legislative record.”

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    Kyl didn’t misunderstanding of current law may have lead to a fundamental mistake.

    I find part I’s discussion of prior art beginning at p. 466 to be of fundamental importance. At one point, we see Kyl exhibiting a total misunderstanding of the current law, asserting in essence that secret use by a third party was prior art.* Thus, it was his objective to eliminate all trade secret use as prior art to eliminate third party trade secret use as prior art when it was not prior art under current law. In doing so, he may have changed a fundamental aspect of the current law that barred an inventor from commercially using the invention ad infinitum in secret and still, after any period of years, file and obtain a patent. This will have essentially overruled one of the most important Supreme Court patent cases in our history, Pennock v. Dialogue. It is amazing that reason the new prior art section is written the way it is because the good Senator never really understood what he was talking about.

    * From page 473:
    In a rejoinder to critics who had argued that the AIA would make it easier for unscrupulous foreigners to steal U.S. inventions, Senator Kyl argued that the AIA’s public-availability standard of prior art will make it harder for another person to steal or fraudulently invalidate a U.S. inventor’s patent.255 He noted that, under the bill, “only those actions that made the invention publicly available will constitute prior art, and these are much harder to fake than are claims of having secretly made the invention in a private laboratory.”256 He also noted that “it will be impossible for a third party who derived the invention from a U.S. inventor’s public disclosure or patent application to steal the invention or sabotage the U.S. inventor’s patent,” because “[t]he only way to obtain priority or invalidate the invention would be to file or publicly disclose the invention before the U.S. inventor has done so—something that will obviously be impossible for [a] deriver to do.”257

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    Thanks very much for this research effort and for providing its availability.

    P.S. another question as to what is genuine “legislative history” or not for the AIA, in addition to the above comment, has been raised by Hal Wegner, who has argued that some of it was ex post facto commentary. See especially pages 138-140, “§232 The Faux Post-Vote Legislative History,” of “Wegner, The 2011 Patent Law [Fourth edition]”

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    My understanding was that what “legally” constitues legislative history cannot extend past the term of the current legislature.

    Is “which is scattered through more than five years of Congressional materials” then a misnomer?

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